Ex Parte 7,813,596 B2 et al

Patent Trials and Appeals Board

Sep 28, 2018

95000684 - (D) (P.T.A.B. Sep. 28, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,684 08/17/2012 7,813,596 B2 7571
23363 7590 09/28/2018
Lewis Roca Rothgerber Christie LLP
PO BOX 29001
Glendale, CA 91209-9001
UNITED STATES OF AMERICA
EXAMINER
FOSTER, ROLAND G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/28/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

GOOGLE INC.
Requester

v.

Patent of VERDERI, LLC.
Patent Owner
____________________

Appeal 2018-007745
Reexamination Control No. 95/000,684
Patent No. 7,813,596 B2
Technology Center 3900
__________________

Before DENISE M. POTHIER, ERIC B. CHEN, and IRVIN E. BRANCH,
Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION UNDER 37 C.F.R. § 41.77(f)
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I. STATEMENT OF CASE
This proceeding involves U.S. Patent No. 7,813,596 (the ’596 patent) issued
October 12, 2010 to Enrico Di Bernardo and Luis F. Concalves.
In an earlier Decision (“Dec.”) mailed August 15, 2016, we affirmed the
Examiner’s decision (1) rejecting claims 4, 21, 63–66, 68, 70, 71, 74, and 75 of the
’596 patent and (2) determining claim 67 is patentable. Dec. 41. We reversed the
Examiner’s decision rejecting claim 69 and determining claims 72 and 73 are
patentable. Dec. 41. We presented new grounds of rejection for claims 69, 72, and
73. Dec. 35–41.
Patent Owner elected to reopen prosecution before the Examiner pursuant to
37 C.F.R. § 41.77(b)(1) (“PO Response”), submitting an amendment to claims 72
and 73 and adding new claims 76 through 78. Requester filed comments under 37
C.F.R. § 41.77(c) (“3PR Comments.”) On May 23, 2017, the Office granted
Patent Owner request to reopen prosecution for consideration of claims 72, 73, and
76 and remanded the proceedings to the Examiner. Order 5.
On remand, the Examiner determined the new ground of rejection for claims
72 and 73 presented in the Decision have not been overcome in the “Examiner’s
Determination Under 37 CRF [sic] 41.77(d)” (“Deter.”) mailed May 17, 2018.
Deter. 2. As for claim 76, the Examiner states the ’596 patent’s Specification fails
to describe the “overlapping” feature and maintains the ground of rejection for
claim 76, substituting for claim 69, based on Ishida and Dykes. Deter. 2–3, 9–12.
Patent Owner submitted comments (“PO Comments”) as set forth in 37 C.F.R.
§ 41.77(e) on June 15, 2018. Requester submitted a reply (“3PR Reply”) to the
Patent Owner’s comments as set forth in 37 C.F.R. § 41.77(e) on July 13, 2018.
This proceeding has been returned to the Board under 37 C.F.R. § 41.77(f).
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Claim Status
Claims 1–3, 5–20, and 22–62 are either canceled or not subject to
reexamination. PO Response 20–21. Claims 4, 21, and 63–76 are pending and
claims 77 and 78 have not been entered. PO Response 20, 22; Order 3–5. Of the
pending claims, claims 4, 21, 63–66, and 68–76 have been rejected. Dec. 35–41;
Ex. Deter. 9–11. We address claims 72, 73, and 76, which are subject to the
remand order. Remand Order 5.
Our new Decision is deemed to incorporate the earlier Decision, except for
any portion specifically withdrawn. 37 C.F.R. § 41.77(f).
Claim 72 and claims 1 and 4, from which claim 72 depends directly or
indirectly, read as follows:
1. (Canceled) In a system including an image source and a user
terminal having a screen and an input device, a method for enabling
visual navigation of a geographic area from the user terminal, the
method comprising:
receiving a first user input specifying a first location in the
geographic area;
retrieving from the image source a first image associated with
the first location, the image source providing a plurality of images
depicting views of objects in the geographic area, the views being
substantially elevations of the objects in the geographic area, wherein
the images are associated with image frames acquired by an image
recording device moving along a trajectory;
retrieving a map of at least a portion of the geographic area;
displaying the retrieved first image on a first display area of the
screen and the retrieved map on a second display area of the screen;
receiving a user selection of a position on the displayed map;
determining a second location based on the user selected
position; and
retrieving from the image source a second image associated
with the second location.

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4. (Original) The method of claim 1,
wherein the first and second images are each a composite
image,
wherein each composite image is created by processing pixel
data of a plurality of the image frames.

72. (Currently Amended) The method of claim 4, wherein the
image source comprises substantially all the static objects in the
geographic area[,] and wherein the first and second images each
provide a panoramic view of objects at respectively the first and
second locations to allow a user to visually navigate the area from the
user terminal.

PO Response 2–3, 18 (underlining currently amended language).
Prior Art
The following evidence of unpatentability is relevant to the new grounds of
rejection (1) presented in the August 15, 2016 Opinion or (2) proposed by
Requester in its October 14, 2016 Comments:
Frank Yee, GPS & Video Data Collection In Los Angeles County: A Status Report,
Position Location and Navigation Symposium, IEEE Position Location and
Navigation Symp. 388–393 (1994) (“Yee”).

Tom Ishida et al., Digital City Kyoto: Towards A Social Information
Infrastructure, 1652 Lecture Notes in Artificial Int. from Int'l Workshop on
Cooperative Info. Agents 34-46 (1999) (“Ishida”).

J. Dykes, An Approach To Virtual Environments For Visualization Using Linked
Geo-referenced Panoramic Imagery, Computers, Environment and Urban Systems,
24 Computers, Env’t and Urb. Systems 127–152 (2000) (“Dykes”).

Maintained Rejection
The Examiner states the following new grounds of rejection have not been
overcome:
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Reference(s) Basis Claims Presented/Maintained
Yee § 102(b) 72–73 Dec. 34–40; Ex. Deter. 2–8, 12
Ishida and Dykes § 103(a)
76
(substituting
for claim 69)
Dec. 40;
Deter. 2–3, 10–12

Requester proposes the following new grounds of rejection:
Reference(s) Basis Claims Presented/Maintained
Yee and Dykes § 103(a) 72 3PR Comments 3–10
Ishida and Dykes § 103(a) 72 3PR Comments 10
Yee or Yee and
Lachinski § 103(a) 73 3PR Comments 11–14
§ 112, ¶ 1 76 3PR Comments 15–16

II. MAIN ISSUE
Has Patent Owner amended claims 72, 73, and 76 (substitute for claim 69)
sufficiently to overcome the new grounds of rejection presented in the August 15,
2016 Decision?

III. ANALYSIS
The Examiner maintains the rejection of claims 72 and 73 under 35 U.S.C.
§ 102(b) based on Yee. See Ex. Deter. 2–8, 12; see also Dec. 26–30. Requester
presents new grounds of rejection for (1) claim 72 under 35 U.S.C. § 103 based on
Yee and Dykes and Ishida and Dykes (3PR Comments 3–10) and (2) claim 73
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under 35 U.S.C. § 103 based on Yee alone or Yee and Lachinski (3PR Comments
11–14). Below, we addressed each claim separately.
A. Claim 72
(1) Yee
Claim 72 newly recites, in relevant part, “the first and second images
each provide a panoramic view of objects at respectively the first and second
locations to allow a user to visually navigate the area from the user
terminal.” PO Response 18 (underlining omitted). Notably, claim 4, from
which claim 72 depends, requires “the first and second images are each a
composite image.” PO Response 3. Claim 72 thus requires each of “the
first and second images” (1) is a composite image and (2) provides a
panoramic view of objects at a location.
Patent Owner asserts that Yee does not disclose images providing “a
panoramic view” as claimed. PO Response 3, 27–28; PO Comments 3–9.
For the following reasons, we disagree.
The ’596 patent does not define the phrase “panoramic view.” The ’596
patent, Abstract, 5:47–51, col. 18 (claim 25), and col. 21 (claim 55); see also Dec.
17. The ’596 patent discusses “composite images preferably provide a wider field
of view of the location than any single image frame acquired by” a camera and
“help provide a panoramic view of the location.” The ’596 patent 5:47–51, cited in
Dec. 17; see also PO Comments 5–6 (quoting from column 5). The ’596 patent’s
Specification fails to discuss an angle of view or range that a panoramic view or a
wider field of view encompasses. Moreover, the ’596 patent’s Specification does
not state the composite image providing a wider field of view of a location than
any single image is a panoramic view but rather that a composite image preferably
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has a wider field of view and helps provide a panoramic view. The ’596 patent
5:47–51.
Given the above discussion, the ’596 patent does not equate an image
having a panoramic view to an image with a wider field of view than a
single image frame a camera can acquire. Nor does claim 72. See Ex.
Deter. 5 (stating claim 72 “fails to reflect this argued difference [of the
composite image has a wider field of view than the acquired image].”). That
being said, one ordinary understanding of the word, “panoramic,” includes
“a photograph that includes a wide view of a scene or a group of people
made by a panoramic camera or by joining separate photographs.” PO
Comments 6 (quoting WEBSTER’S THIRD NEW INTERNATIONAL
DICTIONARY). This definition indicates a panoramic view has a wide view
of a scene. Another ordinary meaning of “panoramic” includes “(of a view
of picture) with a wide view surrounding the observer; sweeping.”1 Patent
Owner also provides a definition of “panoramic image” to include “a wide
field of view image, up to a full view of 360°.” PO Comments 6 (quoting S.
Peleg et al., PANORAMIC IMAGING WITH HORIZONTAL STEREO IN PANORAMIC
VISION: SENSORS, THEORY, AND APPLICATIONS 143–60, 143 (2001)).
Although not claiming “a panoramic image,” this definition reinforces “a
panoramic view” has a wide view of a scene but does not requires a 360°
view.
We, thus, determine the recited “panoramic view of objects” includes
a wide or sweeping view, which may or may not be a full 360° view, and

1 Panoramic, Oxford Dictionaries, available at
https://en.oxforddictionaries.com/definition/us/panoramic.
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can be made by joining separate images.
Yee does not use the terms panorama or panoramic view. Dec.
27–28. But, identity of terminology between Yee and the claim language is
not required to disclose claim 72’s limitations. See In re Bond, 910 F.2d
831, 832 (Fed. Cir. 1990). Yee states its cameras “can go from wide angle
to a zoomed-in view.” Yee 391. As such, images captured by Yee’s
cameras include wide-angle views. See Yee 391.
Yee also discloses “[s]ome of the specific data to be collected and
made available . . . include: curbside view, front and back; street view, front
and back; real estate view left and right; real estate and address zoom, 4-
view; and composites of them.” Yee 389 (emphasis added), cited in Dec. 22.
Patent Owner acknowledges “Yee appears to include any combination of
multiple images.” PO Comments 7. Thus, Yee discloses composites that
include multiple images and thereby encompass a wider field of view of a
location. We therefore agree with Requester that “[t]here is nothing in Yee
to suggest that Yee’s teachings are limited to providing ‘narrow fields of
view that provide insufficient context for a user to visually orient himself’”
(3PR Comments 6) or make it difficult to navigate an area as argued by
Patent Owner (PO Response 28; PO Comments 4).
For example, Yee discloses creating composites from multiple
images, each image taken as a wide angle shot, including a composite of (1)
a “curbside view, front and back” and a “street view, front and back,” (2) a
“curbside view, front and back” and a “real estate view left and right,” and
(3) a “curbside view, front and back,” a “street view, front and back,” and
“real estate view left and back.” Yee 389. Granted, the curbside and street
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views are described as “front and back,” which are “in opposite directions”
(PO Comments 7), but when compositing them, the resulting composite
covers a wider front and back view of both the curb and street’s perspective
(e.g., a panoramic view). Also, when compositing at least one of the
curbside or street views with a “real estate view, left and right,” the resulting
composite covers a wide expanse (e.g., front, back, left and right) or yet
another “panoramic view” as recited.
Patent Owner contends that a “‘composite’ would include images that
would not necessarily be ‘panoramic’” (PO Comments 5) and that not all
composites are “panoramic” (PO Comment 5, 8). See also PO Comments 6.
Patent Owner essentially asserts a “‘panoramic’ is different and not co-
extensive with . . . the word ‘composite.’” PO Comments 5; see also PO
Comments 6. We agree that not all composites are panoramas or create
panoramic views. However, as noted above, Yee discloses some composites
that create a wide or sweeping (e.g., panoramic) view of objects. See 3PR
Reply 5 (quoting Yee 389 and stating “Yee discloses that at least some of its
composite images are panoramic”). Further and contrary to Patent Owner’s
assertions (PO Comments 7, 9), the above-discussed composites includes
views contiguous each other, resulting in a wider view of a location (e.g., the
recited “panoramic view”). See Deter. 5–6 (indicating “the composite
panoramic view would exhibit a different and wider field of view than
acquired images individually”); see also 3PR Reply 4.
For the above reasons, we find no error in maintaining the rejection of
claim 72 based on Yee under 35 U.S.C. § 102.

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(2) Yee and Dykes
The Examiner states he “does not propose any new grounds of
rejection” for claim 72. Deter. 7. As noted in our previous decision when
addressing claim 692 in the context of an anticipation rejection, we stated
Yee “discloses ‘composite[s] of them’ with no details whether such a
composite is a panorama.” Dec. 27–28. Thus, to the extent Yee is viewed as
suggesting, but not necessarily disclosing, composites that “provide a
panoramic view of objects” at a location as recited, we alternatively present
a new ground of rejection for claim 72 under § 103 based on Yee and Dykes.
We adopt the Requester’s proposed rejection as our own. 3PR
Comments 3–10; see also 3PR Reply 4–5, 7–8 (further discussing Dykes
and the recited “panoramic view”).
As previously discussed (Dec. 40), Dykes teaches acquiring image
frames of substantially all objects in an area (e.g., a location) and creating
panoramas at different locations. Dykes 134–36 and 139–42, cited in 3PR
Comments 4–5, 8. Dykes uses a known technique to one skilled in the art of
stitching images together from different points of view (e.g., images located
in the upper left of Figure 2) with a small overlap, resulting in “a continuous
panorama (bottom)” (e.g., an image with a wider field of view). Dykes 135,
Fig. 2, reproduced in 3PR Comments 8; see also Dec. 40. Also, Dykes
teaches creating panoramic images at different locations. Dec. 31–32 (citing
Dykes 141). As such, one skilled in the art would have recognized applying
Dykes’s stitching technique to Yee’s composites, such that each composite

2 Claim 69 recites the same limitation as the limitation added to claim 72.
Compare PO Response 17 with PO Response 18.
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image predictably yields and “provides a panoramic view of objects” at a
first and second location as recited in claim 72. See 3PR Comments 9.
Patent Owner asserts Yee is not suitable for stitching as described in
Dykes. PO Response 31. Patent Owner provides no supporting evidence,
amounting to a mere assertion. This contention is not sufficiently probative.
See Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
As for the recited “image source comprises substantially all the static
objects in the geographic area” in claim 72, Yee teaches collecting data on
street locations, street names, infrastructure (e.g., power poles, street lights,
traffic signals, guard rails, highway striping, etc.), speed limits, speed zones,
one way street data, street signs, centerlines, and pavement edges. Yee 389,
quoted in 3PR Comments 4 and discussed in Dec. 35–36; Deter. 6 (citing
Yee 389). Yee also discusses collecting data to locate hidden objects to
create a comprehensive view. Yee 390, discussed in 3PR Reply 6. Dykes
further teaches, when creating a panoramic view, the series of images
contain substantially all the static objects in an area, including rocks, terrain
features, and other features to make more sense when looking at the area.
See Dykes 134–135, Fig. 2 (bottom image created from the upper-left
images), cited in 3PR Comments 4–5; Dykes 140–42 (discussing the
panorama software), discussed in 3PR Comments 5. Collectively, the
teachings suggest to one skilled in the art the desire to capture substantially
all the static objects in an area to provide more context for the viewer.
Patent Owner asserts “Dykes does not demonstrate that substantially
all the static objects between where the panoramas were taken are captured”
(PO Response 30) and thus does not further teach its images “allow a user to
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visually navigate the area from the user terminal” as recited. PO Response
31. We are not persuaded. First, Yee and Dykes teach capturing
substantially all objects in a geographic area and the images have a small
overlap as previously explained. Second, as Requester explains (3PR
Comments 7–8), claim 72 recites “the image source comprises substantially
all static objects in the geographic area” not the first and second images
comprise substantially all the static objects. 3PR Comments 7–8 (some
bolding and emphasis omitted). As such, the first and second images, as
recited, may include only a portion of objects in the geographic area,
whereas additional images in combination with the first and second images
comprise “substantially all the static objects in the geographic area” as
recited. See 3PR Comments 8 (stating “nothing in amended claim 72
requires the first image and the second image to be within a certain distance
of each other.”)
Based on our construction of claim 72, Dykes need not teach its
“panoramic” views of the first and second images have substantially all the
static objects between the panoramas as argued (PO Response 30) but rather
that each of the first and second images “provide a panoramic view of
objects at respectively the first and second locations.” Also, although
showing different panoramic views that are not adjacent to each other in
Dykes’s Figure 4, Dykes imposes no such restriction of capturing only
images that are miles apart. 3PR Comments 8 (discussing PO Response 31).
For example, Dykes discusses recording images within the same location
(e.g., a museum or building), suggesting creating multiple panoramic images
in the same or close area. See Deter. 10–11 (citing Dykes 134–135).
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As for the limitation that the recited views “allow a user to visually navigate
the area from the user terminal,” Yee teaches allowing a user to navigate an area.
Yee 391–92, cited in 3PR Comments 4; see also Dec. 36 and Deter. 4, 6. Contrary
to Patent Owner’s assertions (PO Response 29–31), Dykes further teaches these
panoramic images are used with panoraMap software to allow a user to navigate
(e.g., panning, touring, and rotating) an area. See Dykes 139–42, Fig. 4, cited in
3PR Comments 5, 8. Thus, combining Dykes with Yee allows “a user to visually
navigate the area from the user terminal” as recited in claim 72. See 3PR
Comments 9; see also 3PR Reply 4–5, 7–8.
According, claim 72 is newly rejected under 35 U.S.C. § 103 based on
Yee and Dykes.
(3) Ishida and Dykes
We further adopt the proposed rejection of claim 72 based on Ishida
and Dykes under 35 U.S.C. § 103. 3PR Comments 10 (citing Dec. 34 and
§ II(A) of 3PR Comments); see also Dec. 28–34 (discussing Ishida and
Dykes in the context of claim 4, from which claim 72 depends).
B. Claim 73
Claim 73 was amended to recite:
The method of claim 4, wherein the first location specified by the first
user input is an arbitrary address entered via the first user input, the
entered arbitrary address specifying information selected from a group
consisting of street name, city, state, and zip code,
wherein the entered arbitrary address further specifies a
requested street number;
wherein the first location is calculated from the arbitrary
address by:
identifying a street segment from a plurality of street
segments wherein the requested street number lies within a
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range defined by starting and ending street numbers of the
identified street segment; and
determining the first location in accordance with a
distance of the requested street number from the starting street
number of the identified street segment.

PO Response 18 (underlining indicating the currently amended claim
language).

(1) Yee Under § 102
Claim 73 currently stands rejected under 35 U.S.C.
§ 102 based on Yee. Dec. 37–40. The Examiner states this rejection has not
been overcome. Deter. 2, 8, 12. Patent Owner argues Yee does not
anticipate claim 73 (PO Response 31–32; PO Comments 10–11) and the
claim should “be found patentable.” PO Response 32. Requester propose a
new ground of rejection based on Yee or Yee and Lachinski under 35 U.S.C.
§ 103. 3PR Comments 11–14.
Patent Owner specifically argues Yee does not disclose the entry of an
“arbitrary address” as recited. PO Comments 12. We disagree. We
previously construed entering “an arbitrary address” as recited in claim 73,
in light of the disclosure, to mean entering an address of a location and not
necessarily a random, potential, or unassigned address. Dec. 38–39 (citing
the ’596 patent 11:45–46, 12:20–26, 32–35, 13:23–37, 55–61), quoted in
3PR Reply 13. Moreover, for similar reasons, we decline to construe “an
arbitrary address” to be an address that is “not tagged” or “would be between
two assigned street numbers” (PO Comments 11) as argued.
Patent Owner also argues Yee does not disclose a method for
calculating the recited “first location” from the recited “arbitrary address” as
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claim 73 now recites. PO Response 31; PO Comments 10. The Examiner
accords no “patentable weight to th[ese] new claim[] limitations.” Deter. 8.
Specifically, the Examiner views the “wherein the entered arbitrary address
further specifies a requested street number” recitation to be “an alternative
that falls outside the closed group (i.e., the ‘consisting of’ group) (i.e., the
Markush group) previously recited.” Deter. 7–8. For reasons described
below, we agree with the Examiner and present a new ground of rejection
for claim 73 under 35 U.S.C. § 112, second paragraph.
Patent Owner contends claim 73 recites the “entered arbitrary
address” specifies information selected from a Markush group (i.e., street
name, city, state, and zip code) and then further recites the arbitrary address
itself—not the address’ information—specifies a requested street number.
PO Comments 10. Patent Owner is technically correct that the recited
address’ “information”—not the recited “arbitrary address”— is selected
from the Markush grouping “of street name, city, state, and zip code.” PO
Response 18. Following from this logic, the additional limitation that the
“arbitrary address further specifies a requested street number” (PO Response
18 (underlining omitted)) purportedly does not fall outside the Markush
grouping narrowly drawn to the address’ “information” but is distinct from
the recited “information.” See PO Comments 10.
However, the Examiner and Requester raises some legitimate
concerns regarding the newly added limitations in claim 73. Deter. 8; 3PR
Reply Br. 9–12. Namely, as explained below, the recited Markush group is
a closed claim group, and claim 73 now “attempt[s] to open a closed
Markush claim group.” 3PR Reply 9 (citing Multilayer Stretch Cling Film
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Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1359 (Fed. Cir.
2016)). Requester notes Patent Owner describes a street name, a city, a
state, and a zip code as address “types of ‘information’” (PO Comments 10)
and a street number as “more types of address data” (PO Comments 10).
3PR Reply 10. In Requester’s words, “Patent Owner never explains the
distinction between these two types of information, and the plain language
of the claim and the specification . . . contradict Patent Owner’s position.”
3PR Reply 10; see also 3PR Reply 11–12 (quoting the ’596 patent 12:17–22
and reproducing Figure 16).
When construing the newly amended limitations in light of the ’596
patent’s Specification, the street number is the same type of information as
the street name, city, or state. 3PR Reply 12. Specifically, the ’596 patent
illustrates a GUI (graphical user interface) that includes address input fields
220. The ’596 patent 12:17–22, Fig. 16, cited in 3PR Reply 11. These
fields allow “the user to enter street number, street name, city and state of
the particular location he or she desires to view.” The ’596 patent 12:20–22,
Fig. 16. Given the description in the ’596 patent, the recited “street number”
in claim 73 construed in light of the Specification is “another example of
‘arbitrary address’ information” that is part of the address input fields. 3PR
Reply 10; see also 3PR Reply 12.
Turning back to claim 73, the claim recites the address “information”
as a closed Markush group (i.e., a street name, a city, a state, and a zip code),
such that the claim must be closed to other address “information.” See 3PR
Reply 10–11. With the newly recited “requested street number” in claim 73,
the claim opens the recited, closed Markush group to other address
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“information.” See 3PR Reply 10–12. The scope of claim 73 is therefore
unclear as to whether the Markush group includes the recited “requested
street number” or whether Patent Owner is attempting to limit the claim in
some other undisclosed and distinct manner. Claim 73 therefore is amenable
to two or more plausible constructions and is not sufficiently definite, such
that those skilled in the art would understand what is being claimed when
read in light of the ’596 patent’s Specification. See Ex parte Miyazaki, 89
USPQ2d 1207, 1210–13 (BPAI November 19, 2008) (precedential).
Accordingly, we enter a new ground of rejection for claim 73 under
35 U.S.C. § 112, second paragraph as being indefinite for failing to
particularly point out and distinctly claim the subject matter considered to be
the invention.3 See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014)
(stating “the statutory language of ‘particular[ity]’ and ‘distinct[ness]’
indicates, claims are required to be cast in clear—as opposed to ambiguous,
vague, indefinite—terms.”).
Next, we turn to the prior art under two plausible constructions for
claim 73 that include (1) the additional limitations do not further limit the
claim (“Interpretation 1”) and (2) the additional recitations further limit the
claim with the “requested street number” being part of the closed Markush
group (“Interpretation 2”).

3 In Multilayer Stretch, 831 F.3d at 1361–62, the court stated the dependent
claim was improper under 35 U.S.C. § 112(d) or fourth paragraph (pre-
AIA). In the instant case, however, claim 73 does not depend on a claim
that recites a Markush group. Rather, as explained above, claim 73 recites
both a Markush group and separately recites an additional member of the
closed group in another recitation. PO Response 18.

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Under Interpretation 1 (Deter. 8; 3PR Reply 14), we are agree with the
Examiner that the rejection under § 102 based on Yee (Dec. 37–40) has not
been overcome and should be maintained because there is no requirement
that the address include a requested street number. Deter. 2, 7–8.
Under Interpretation 2, Yee does not disclose all the limitations in
claim 73—namely the steps of “identifying street segment” and
“determining the first locations” based on the requested street number. To
be sure, Yee teaches a “[s]treet address entry” (Yee 392) or the user inputs
the recited address as recited. Yee, however, does not state explicitly what
the street address contains. To the extent Yee’s “street address” does not
necessarily include a street number, one skilled in the art would have
recognized the recited phrase “street address” includes a street number.4
Additionally, Yee discloses a user can point to a road segment and
display images for the street segment. Yee 391–92, cited in 3PR Reply 13.
But, this teaching provides no details regarding how the disclosed street
segment is determined or calculated (i.e., the recited “first location”),
including whether Yee’s process to display images for a street segment
include “identifying a street segment from a plurality of street segments
wherein the requested street number lies within a range defined by starting
and ending street numbers of the identified street segment” and “determining
the first location in accordance with a distance of the requested street
number from the starting street number of the identified street segment” as
claim 73 recites. PO Response 18 (underlining omitted). We, thus, cannot

4 WESTERN MICHIGAN UNIVERSITY – WRITING STYLE GUIDE (discussing a USPS
“street address” and illustrating the street address includes both a street number
and street name), available at https://wmich.edu/writing/rules/addresses.
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conclude Yee necessarily discloses the additional, recited steps for
calculating “the first location . . . from the arbitrary address” in claim 73
under Interpretation 2.
Accordingly, we maintain the rejection of claim 73 under § 102 based
on Yee only under Interpretation 1.
(2) Yee Under § 103
Requester proposes a new ground of rejection for claim 73 under 35
U.S.C. § 103 based on Yee or Yee and Lachinski. 3PR Comments 11–14;
3PR Reply 14–15. Neither of these proposed rejection were adopted by the
Examiner. Deter. 8. Under Interpretation 1, the new proposed rejections are
duplicative. Under Interpretation 2, although Yee teaches every house on a
street is tagged with its address (Yee 392), we disagree with Requester (3PR
Comments 11–12) that this sufficiently suggests the recited steps of
“identifying a street segment from a plurality of street segments wherein the
requested street number lies within a range defined by starting and ending
street numbers of the identified street segment” and “determining the first
location in accordance with a distance of the requested street number from
the starting street number of the identified street segment” in claim 73.
Notably, Lachinski cures what is missing from Yee under
Interpretation 2. Namely, Lachinski teaches (1) identifying a street segment
using a TIGER/Line identification (TLID) system that contains an overall
address range for the street segment, suggesting to one skilled in the art the
address range has a starting and ending street numbers. Lachinski 16:40–
17:13. Lachinski further teaches determining a location with a distance from
a starting street number (e.g., an offset from a node at an end of a street
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segment that is used as a beginning point for the address range within a
street segment). Lachinski 16:40–17:13. We also adopt Requester’s
discussion and analysis of what Lachinski teaches and the reason for
combining Lachinski with Yee as our own. See 3PR Comments 12–14
(citing Lachinski 3:27–39, 16:33–17:13); see also 3PR Reply 14–15 (citing
Lachinski 16:33–39, 42–43, 16:64–66, 17:4–5, 8–11).
Accordingly, we present a new ground of rejection for claim 73 based
on Yee and Lachinski under 35 U.S.C. § 103 for Interpretation 2.
C. Claim 76
New claim 76 recites “[t]he method of claim 69, wherein the first and
second images provide overlapping panoramic views at the first and second
locations.” PO Response 19. Requester proposes to reject claim 76 under
35 U.S.C. § 112, first paragraph (3PR Comments 15–16) and to maintain the
obviousness rejection of claim 76, which is a substitute for claim 69, under §
103 based on Ishida and Dykes (3PR Comments 16–17).
As a preliminary matter, Requester argues that claim 76 should not be
considered because the claim is new and not “an amendment of the claim[]
so rejected” as set forth in 37 C.F.R. § 41.77(b)(1). 3PR Comments 14–15.
Requester refers to an order in another, unrelated reexamination proceeding,
Control No. 95/002,170, which barred new claims from its request to reopen
prosecution to support that claim 76 in this proceeding should not be
considered. We are not persuaded.
First, claim 69 is newly rejected under 35 U.S.C. § 103 based on
Ishida and Dykes. Dec. 40. In our order, we explained claim 76 depends
from claim 69 and thus includes all the language of unamended claim 69.
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See Order 4. Claim 76 further includes additional claim language. We thus,
treated claim 76 as an amendment to claim 69 “so rejected” as set forth in 37
C.F.R. § 41.77(b)(1). Order 4. Second, we are not bound by a non-
precedential decision made by panels in other proceedings. Third, although
the order in Control No. 95/002,170 states claims other than those subject to
the new ground are beyond the scope of Rule § 41.77(b)(1) on page 4, this
order also indicates on page 5 Patent Owner is limited to certain amended or
substituted claims. Our decision to consider claim 76 as a substitute for
claim 69 (Order 4) and to allow claim 76 to be considered in the request to
reopen (Order 5) is therefore proper.
(1) 35 U.S.C. § 112, First Paragraph (Lack of Written Description)
Requester proposes a rejection under 35 U.S.C. § 112, first paragraph
as lacking written description support for the recited “first and second
images provide overlapping panoramic views” in claim 76. 3PR Comments
15–16 (citing the ’596 patent 5:66–6:1, Fig. 2). The Examiner does not state
whether he adopted Requester’s proposed rejection but agrees Figure 2 of
the ’596 patent does not show images at two different locations “that are
‘overlapping’ as recited.” Deter. 10. In response, Patent Owner points to
Figure 16, contending this figure and its accompanying disclosure support
the recited “overlapping panoramic views.” PO Comments 14–15. We
agree with Patent Owner.
To satisfy the written description requirement, a patent specification must
describe the claimed invention in sufficient detail that one skilled in the art can
reasonably conclude that the inventor had possession of the claimed invention. See
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351(Fed. Cir. 2010).
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Regarding Figure 2, we agree the ’596 patent does not support the first and second
images, which are each composite image, “provide overlapping panoramic views”
as recited. Figure 2 shows multiple images (e.g., 42) forming a composite image
(e.g., 40 or a first or second image as recited in claim 76). The ’596 patent 2:63–
64, 5:52–6:1, Fig. 2. This composite image provides a panoramic view as shown
by image 40. The ’596 patent, Fig. 2. But, Figure 2 does not show or describe
forming two composite images (e.g., the recited “first and second images”) that
“provide overlapping panoramic views.” The ’596 patent 2:63–64, 5:52–6:1,
Fig. 2.
As for Figure 16, a first image provides a panoramic view shown as image
area 224. The ’596 patent 12:30–32, Fig. 16. The ’596 patent further discusses a
user can navigate through the streets using navigation buttons 232. The ’596
patent 13:10–11. When navigating, the ’596 patent states “the current position is
incremented by a predetermined amount, currently set to eight meters, to the next
available composite image on the current or adjacent segment. The image area 224
is then updated with the new composite image.” The ’596 patent 13:16–20, Fig.
16, cited and reproduced in PO Comments 14–15. As such, the disclosure
provides details that the current and the next images are composite images (e.g.,
224), and each reveals a panoramic view (e.g., 224) under our previous stated
interpretation of this phrase that includes a wide or sweeping view. The ’596
patent 13:11–20, Fig. 16.
Interestingly, column 13 describes the increment between the current
position (e.g., a first location) and the next image at another position (a second
image at a second location) is currently set at eight meters. For example, image
224 moves eight meters to east to the next available composite image on the
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current segment. The ’596 patent 13:10–19, Fig. 16. One skilled in the art would
have reasonably concluded an eight meter shift to the east still includes some of the
image captured in original image 224. The ’596 patent 13:10–19, Fig. 16. Given
these details in the disclosure, we further determine that one skilled in the art
would have reasonably concluded that composite image shown in Figure 16 and
composite images described in column 13 that are eight meters apart overlap each
other. More specifically, one skilled in the art would have reasonably concluded
the inventors had possession of the recited “first and second images provide
overlapping panoramic views at the first and second locations” recited in
claim 76.
Requester and the Examiner argue as claimed the “broad language imposes
no requirement that the ‘the first and second images overlap each other.” 3PR
Reply 17 (quoting from Deter. 10 and omitted underlining). Focusing on the ’596
patent’s discussion that the next available composite image can be an adjacent
segment or a completely new street segment, Requester asserts this disclosure in
the ’596 patent suggests composite images may be apart and not overlapping with
each other. 3PR Reply 17. Assuming Requester is correct that some of the next
available composite images are on different street segments, the ’596 patent also
discusses other available composite images are on the current segment. The ’596
patent 13:18–19.
For the above reasons and to the extent the lack of written description
rejection has been adopted, the rejection is withdrawn.
(2) Ishida and Dykes
Claim 69 was newly rejected based on Ishida and Dykes. Dec. 40.
As explained above, claim 76 substitutes for this claim. Requester proposes
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claim 76 is unpatentable over Ishida and Dykes. 3PR Comments 16–17.
The Examiner agrees that the rejection based on Ishida and Dykes should be
maintained. Deter. 2–3, 10–12.
Patent Owner repeats the arguments made for claim 72, including that
the panoramic views of Dykes are captured at distant locations. PO
Response 32. We are not persuaded for reasons already discussed. Patent
Owner also argues Dykes does not explicitly describe the manner in which
images would be capture in a museum or building. PO Comments 16. As
previously discussed, Dykes teaches and shows in Figure 2 how images in
close proximity and having “a small overlap” are stitched together to form a
panoramic view. Dykes 134–35, Fig. 2, reproduced in 3PR Comments 5.
Dykes further suggests that multiple panoramic images taken around a
museum or building would be taken using the same technique, such that
each image is a composite and provides a panoramic view. See Dykes 134–
35. Moreover, Dykes indicates multiple panoramic images and panoramic
images may be taken in same area or close proximity (e.g., around museum
or building), suggesting to those skilled in the art that those images will
overlap. We refer to our previous discussion of Dykes for more details.
As illustrated by Requester, we also agree that panoramic views from
locations 3 and 4 in Dykes’s Figure 4 would have suggested to an ordinary
artisan the recited “images provide overlapping panoramic views at the first
and second locations” in claim 76. See Reply Br. 18–19 (citing Dykes 132,
139–40, Abstract, Figs. 1, 2, 4). We therefore, disagree with Patent Owner
that the proposed rejection relies on impermissible hindsight. PO Comments
16. We further adopt Requester’s position as our own. 3PR Comments
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16–17.
Accordingly, we find no error in maintaining the rejection for claim
76 under § 103 based on Ishida and Dykes.
(3) Yee and Dykes
Pursuant to 37 C.F.R. § 41.77(b),5 we additionally present a new
ground of rejection for claim 76 under 35 U.S.C. § 103 based on Yee and
Dykes. Claim 76 depends from claim 69, which further depends on claim 4.
We adopt the analysis of claim 4 and Yee previously presented. Dec. 20–26
(citing RAN 8–12, Request 79–97, Claim Chart CC-B, and Yee 389–90).
We also adopt the Requester’s proposed analysis for claim 72, which has a
similar limitation of the first and second images providing a panoramic view
to that in claims 69 and 76. 3PR Comments 3–10; see also 3PR Reply 4–5,
7–8 (further discussing Dykes and the recited “panoramic view”). Lastly,
we refer to our discussion above when addressing (1) Yee and Dykes and the
“panoramic view” limitation in claim 72 and (2) Dykes and the “overlapping
panoramic views” in claim 76.
When combining Dykes’s teaching with the previously discussed
teachings in Yee, the combination results in at least some composite images
being adjacent and overlapping and thus would further suggest to one skilled
in the art such composite images providing “overlapping panoramic views at
the first and second locations” as recited. For example, Dykes’s Figure 2
describes and shows “a continuous panorama (bottom)” view produced from

5 Rule 41.77(b) states “should the Board have knowledge of any grounds not
raised in the appeal for rejecting any pending claim, it may include in its
opinion a statement to that effect with its reasons for so holding.”

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multiple frames stitched together. Dykes 135, Fig. 2. We further discussed
above how Dykes teaches or suggests creating more than one panoramic
view in an area, such that one skilled in the art would have recognized the
two views would have predictably overlap. Similarly, Yee teaches collected
data that are “composites” of other views. Yee 389; see also Ex. Deter. 5
(quoting Yee 389 and citing Dec. 22). As previously explained, Yee teaches
creating composites of differing views, including (1) a curbside view, front
and back and a street view, front and back, (2) a curbside view, front and
back and a real estate left and right view or (3) a street view, front and back
and a real estate left and right view) (Yee 389), suggesting generating
images that provide wide views (e.g. panoramic views) and that some of
these views overlap each other (e.g., the curbside view, front and back and
real estate left and right view overlap with a street view, front and back and
a real estate left and right view).
Furthermore, Yee’s teaching of creating composites segues into
Dykes’s teaching to create panoramic imagery by stitching multiple
frames/views together. Dykes 132–35, 139–40, Fig. 2. That is, one skilled
in the art would have recognized that substituting Dykes’s technique for
creating composites for Yee’s process predictably results in generating
composite images, each providing a panoramic view of objects. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Requester provides a
reason with a rational underpinning for combining the references, including
Dykes provides an interface to a user that allows the user to locate and
retrieve panoramic images and navigate a geographic area. See 3PR
Comments 6 (citing Dykes 136, 139–41).
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For the above reasons, we present a new ground of rejection for claim
76 based on Yee and Dykes under 35 U.S.C. § 103.

IV. CONCLUSIONS
The Examiner's decision to reject (1) claims 4, 63–66, 68, 70, 71, and 74
based on Yee and (2) claims 4, 21, and 75 over Ishida and Dykes is affirmed.
The Examiner's decision that claim 67 is patentable is affirmed.
Claim 69 is rejected under 35 U.S.C. § 103 based on Ishida and Dykes.
We affirm the Examiner’s decision to maintain the rejection of claims 72
and 73 (Interpretation 1) based on Yee under U.S.C. § 102.
To the extent claim 76 has been rejected under 35 U.S.C. § 112, first
paragraph, we reverse the rejection.
We affirm the Examiner’s decision to maintain the rejection of claim 76
under § 103 based on Ishida and Dykes.
We present new grounds of rejection for (1) claim 72 under 35 U.S.C. § 103
based on (a) Yee and Dykes and (b) Ishida and Dykes, (2) claim 73 under 35
U.S.C. (a) § 112, second paragraph and (b) § 103 based on Yee and Lachinski
(Interpretation 2), and (3) claim 76 under 35 U.S.C. § 103 based on Yee and
Dykes.

V. TIME PERIOD FOR RESPONSE
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal constitutes a new
ground of rejection. Section 41.77(b) provides that “[a] new ground of rejection . .
. shall not be considered final for judicial review.” That section also provides that
Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
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must exercise one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must
be either an amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both.

(2) Request rehearing. The owner may request that the proceeding be
reheard under§ 41.79 by the Board upon the same record. The request
for rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and also state all
other grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(l), the “[p]arties to the appeal may
file a request for rehearing of the decision within one month of the date of: . . .
[t]he original decision of the Board under§ 41.77(a).” A request for rehearing must
be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request
and additional requests for rehearing must be in accordance with 37 C.F.R.
§ 41.79(c)–(d), respectively. Under 37 C.F.R. § 41.79(e), “[t]he times for
requesting rehearing under paragraph (a) of this section, for requesting further
rehearing under paragraph ( c) of this section, and for submitting comments under
paragraph (b) of this section may not be extended.”
An appeal to the United States Court of Appeals for the Federal Circuit
under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an inter partes
reexamination proceeding "commenced" on or after November 2, 2002 may not be
taken “until all parties’ rights to request rehearing have been exhausted, at which
time the decision of the Board is final and appealable by any party to the appeal to
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the Board.” 37 C.F.R. § 41.81; see also MPEP §§ 2682, 2683 (9th ed., Rev.
07.2015, October 2015).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable
under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37 C.F.R.
§§ 90.1 and 1.983.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
37 C.F.R. § 41.77(b)

FOR PATENT OWNER:
LEWIS ROCA ROTHGERBER CHRISTIE LLP
P.O. Box 29001
Glendale, CA 91209-9001
FOR THIRD-PARTY REQUESTER:
STEPTOE & JOHNSON LLP
1330 Connecticut Avenue, N.W.
Washington, DC 20036

Article I. Notice of References Cited

Application/Control No.

95/000,684
Applicant(s)/Patent Under
Appeal No. 2018-007745
Examiner

Art Unit

Page 1 of 1

Article II. U.S. PATENT DOCUMENTS

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I US-
J US-
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L US-
M US-
Article III. FOREIGN PATENT DOCUMENTS

* Document Number Country Code-Number-Kind Code Date MM-YYYY

Country

Name

Classification
N
O
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R
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T
Article IV. NON-PATENT DOCUMENTS
* Articl Article VI. Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

*
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WESTERN MICHIGAN UNIVERSITY – WRITING STYLE GUIDE, available at
https://wmich.edu/writing/rules/addresses

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Articl
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